Ex Parte Leblang

Board of Patent Appeals and Interferences

May 9, 2011

10748745 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JONATHAN LEBLANG 8
___________ 9
10
Appeal 2010-004550 11
Application 10/748,745 12
Technology Center 3600 13
___________ 14
15
Before HUBERT C. LORIN, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2010-004550
Application 10/748,745

2
STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 14, 2009) and Reply Brief (“Reply Br.,” filed November 3,
2009), and the Examiner’s Answer (“Ans.,” mailed September 3, 2009).
Jonathan Leblang (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-13 and 50-62, the only claims pending 3
in the application on appeal. We have jurisdiction over the appeal pursuant 4
to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of classifying articles based on article 6
characteristics (Specification ¶ 0004). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. An article processing system, comprising: 11
[1] a database that stores 12
article identification information and 13
article location information 14
for a plurality of articles; 15
[2] a first module that determines 16
at least a shipment date when a pending user order is to 17
be shipped, wherein the pending order was placed via a 18
computer network during a first network session; 19
[3] a second module that, 20
based at least in part on information retrieved from the 21
database, 22
identifies at least a first article 23
Appeal 2010-004550
Application 10/748,745

3
that can be added to the pending order 1
within a first amount of time 2
without delaying the shipment date of the pending 3
order; and 4
[4] a third module that 5
causes a notification to be presented to the user, 6
wherein the notification indicates 7
that the user can add at least the first article to the 8
pending order 9
without delaying the pending order shipment. 10
The Examiner relies upon the following prior art: 11
Knorr US 2002/0077929 A1 Jun. 20, 2002
Shinohara US 2003/0097311 A1 May 23, 2003
Silverbrook US 2003/0130903 A1 Jul. 10, 2003
Marston US 2004/0260710 A1 Dec. 23, 2004
Shmukler US 2005/0010857 A1 Jan. 13, 2005
Claims 1, 3, 6, 9, 10, 12, 13, 50, 52, 55, 58, 59, 61, and 62 stand rejected 12
under 35 U.S.C. § 102(b) as anticipated by Knorr. 13
Claims 2 and 51 stand rejected under 35 U.S.C. § 103(a) as unpatentable 14
over Knorr and Marston. 15
Claims 4 and 53 stand rejected under 35 U.S.C. § 103(a) as unpatentable 16
over Knorr and Shinohara. 17
Claims 5 and 54 stand rejected under 35 U.S.C. § 103(a) as unpatentable 18
over Knorr, Official Notice, and Shmukler. 19
Appeal 2010-004550
Application 10/748,745

4
Claims 8, 11, 57, and 60 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Knorr and Official Notice. 2
Claims 7 and 56 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Knorr and Silverbrook. 4
ISSUES 5
The issues of anticipation and obviousness turn primarily on whether 6
Knorr describes identifying an article for adding and notifying the customer 7
that that article can be added to an order without delaying the shipment. 8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to the Prior Art 12
Knorr 13
01. Knorr is directed to electronically creating and managing 14
pended orders. The present invention includes methods and 15
systems whereby end users may select catalogued items from one 16
or multiple e-vendors for immediate entry into an order pending 17
database, for later transmission to an electronic vendor. Knorr ¶ 18
0002. 19
02. Knorr describes an example in which a customer wishes to buy 20
an item for Mother's Day several weeks prior to the occurrence of 21
Mother's Day. The order pending system pends the transaction for 22
Appeal 2010-004550
Application 10/748,745

5
later transmission as an order to the parent e-vendors. Knorr ¶ 1
0050. 2
03. Knorr’s order pending database holds the information for the 3
order pending shopping cart for that event. The data in the order 4
pending database is fluid or variable at this point and may be 5
changed by the purchaser. Selection in the order pending shopping 6
cart can be processed and updated in batch mode, for example, at 7
night, for access by the electronic vendor(s) who had transactions 8
complete during the prior day. The vendor can use the time 9
between the electronic hold and the ultimate order execution to 10
plan inventory and interact with the purchaser for suggestive 11
sellings, i.e., up-selling and or cross-selling. Knorr ¶ 0065. 12
04. Knorr’s existing pending orders may be shown, e.g., with an 13
icon or thumbnail picture of a selected item, in conjunction with 14
upcoming events in the personal scheduler of the purchaser. This 15
may be linked to suggestive selling or upgrading solicitations or 16
inducements, e.g., special offers or coupons. Knorr ¶ 0042. 17
ANALYSIS 18
Claims 1, 3, 6, 9, 10, 12, 13, 50, 52, 55, 58, 59, 61, and 62 rejected under 35 19
U.S.C. § 102(b) as anticipated by Knorr. 20
We are unpersuaded by the Appellant’s arguments that Knorr fails to 21
describe identifying an article for adding and notifying the customer that that 22
article can be added without delaying the shipment. Appeal Br. 7-11. Knorr 23
pends a transaction allowing additional items to be added to an order without 24
changing the order parameters. Knorr does this so additional items may be 25
Appeal 2010-004550
Application 10/748,745

6
sold in the same order. FF 02 - 03. If this were the extent of how Knorr 1
processes an order, the Appellant would have a point. But Knorr also 2
allows a customer to establish a ship date at some point in the future such 3
that the pending action does not affect the ship date. FF 02. Thus, unlike 4
the case the Appellant appears to postulate in which an order is shipped as 5
quickly as possible after order completion, Knorr allows a customer to build 6
in a buffer and then Knorr allows vendors to take advantage of that buffer to 7
sell additional items without affecting the order parameters, such a ship date. 8
Since the order parameters are unchanged, the customer is implicitly notified 9
that the additional items will not affect the ship date. 10
We are unpersuaded by the Appellant’s reliance on the argument in 11
claim 1 that Knorr fails to describes notifying at least in part based on the 12
user accessing the network in claim 3, as again Knorr relies on recognizing 13
that access to sell more items implicitly notifying the customer. 14
We are unpersuaded by the Appellant’s argument that Knorr fails to 15
describe the notification including an order incentive offer in claim 6, as the 16
pending orders which are the subject of Knorr’s implicit notification may be 17
linked to special offers or coupons. FF 04. In addition, as the Examiner 18
found at Answer 12-13, the content of the notification is not a structural 19
limitation and is therefore afforded no patentable weight in a system claim. 20
We are unpersuaded by the Appellant’s argument that Knorr fails to 21
describe the first article being identified based in part on user history order 22
information retrieved from the database in claim 10, as Knorr describes 23
upselling during the pending period from items previously purchased. FF 24
03. 25
Appeal 2010-004550
Application 10/748,745

7
We are unpersuaded by the Appellant’s argument that Knorr fails to 1
describe the first article being identified based in part on user preference 2
information retrieved from the database in claim 12, as Knorr describes 3
using a user’s personal scheduler preferences for such additional selling. FF 4
04. Although the user’s personal scheduler is not part of the database, the 5
data retrieved from such a scheduler would necessarily be entered into 6
Knorr’s database for a vendor to retrieve such information. In addition, as 7
the Examiner found at Answer 12-13, Knorr’s system certainly has the 8
capacity to use any data in its database and the only structural part of this 9
limitation is the capacity for such an operation in this system claim. 10
We are unpersuaded by the Appellant’s argument that Knorr fails to 11
describe the notification being provided to the user after the pending order 12
was placed in claim 13, as Knorr describes such selling after the initial order 13
is entered. FF 03. 14
Claims 2 and 51 rejected under 35 U.S.C. § 103(a) as unpatentable over 15
Knorr and Marston. 16
The Appellant relies on the arguments in support of claim 1, other than 17
to argue the lack of a clear articulation of a rational for combining. We are 18
unpersuaded by this because the Examiner found that Knorr would 19
incorporate Marston to alert a user of a change. 20
21
22
Claims 4 and 53 rejected under 35 U.S.C. § 103(a) as unpatentable over 23
Knorr and Shinohara. 24
Appeal 2010-004550
Application 10/748,745

8
The Appellant essentially relies on the arguments in support of claim 1. 1
The argument that Shinohara’s email fails to explicitly recite that the 2
notification of claim 1 does not negate the implicit notification from claim 1 3
that would also attach to any communication regarding the order. 4
Claims 5 and 54 rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Knorr, Official Notice, and Shmukler. 6
Here we are persuaded by the Appellant’s arguments that the applied 7
references fail to describe the notification including a link, wherein if the 8
user activates the link after the first amount of time, the user is provided a 9
message indicating that the first amount time to add articles to the pending 10
order has expired. The Examiner mentions Official Notice but fails to 11
provide any Official Notice evidence, but instead just reaches an 12
unsubstantiated legal conclusion of obviousness. 13
Claims 8, 11, 57, and 60 rejected under 35 U.S.C. § 103(a) as unpatentable 14
over Knorr and Official Notice. 15
Here we are persuaded by the Appellant’s arguments that the applied 16
references fail to describe the location information being used by the second 17
module to determine how long it would take to transport the first article from 18
a storage area to a packing area, or the first article being identified based in 19
part on the quantity of the first article in inventory in an order fulfillment 20
center from which at least one article in the pending order is to be shipped. 21
The Examiner mentions Official Notice but fails to provide sufficient 22
Official Notice evidence to support the rejection. 23
24
Appeal 2010-004550
Application 10/748,745

9
Claims 7 and 56 rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Knorr and Silverbrook. 2
We are unpersuaded by the Appellant’s argument that Knorr fails to 3
describe a fourth module, that, during a second network session, provides 4
that user with an interface via which the user can add at least the first article 5
to the pending order in claim 7, as Knorr describes such selling after the 6
initial order is entered. FF 03. The Examiner relies on Silverbrook merely 7
for implementation details as to how a customer would access an order in 8
Knorr. 9
CONCLUSIONS OF LAW 10
The rejection of claims 1, 3, 6, 9, 10, 12, 13, 50, 52, 55, 58, 59, 61, and 11
62 under 35 U.S.C. § 102(b) as anticipated by Knorr is proper. 12
The rejection of claims 2 and 51 under 35 U.S.C. § 103(a) as 13
unpatentable over Knorr and Marston is proper. 14
The rejection of claims 4 and 53 under 35 U.S.C. § 103(a) as 15
unpatentable over Knorr and Shinohara is proper. 16
The rejection of claims 5 and 54 under 35 U.S.C. § 103(a) as 17
unpatentable over Knorr, Official Notice, and Shmukler is improper. 18
The rejection of claims 8, 11, 57, and 60 under 35 U.S.C. § 103(a) as 19
unpatentable over Knorr and Official Notice is improper. 20
The rejection of claims 7 and 56 under 35 U.S.C. § 103(a) as 21
unpatentable over Knorr and Silverbrook is proper. 22
Appeal 2010-004550
Application 10/748,745

10
DECISION 1
To summarize, our decision is as follows. 2
 The rejection of claims 1, 3, 6, 9, 10, 12, 13, 50, 52, 55, 58, 59, 61, 3
and 62 under 35 U.S.C. § 102(b) as anticipated by Knorr is sustained. 4
 The rejection of claims 2 and 51 under 35 U.S.C. § 103(a) as 5
unpatentable over Knorr and Marston is sustained. 6
 The rejection of claims 4 and 53 under 35 U.S.C. § 103(a) as 7
unpatentable over Knorr and Shinohara is sustained. 8
 The rejection of claims 5 and 54 under 35 U.S.C. § 103(a) as 9
unpatentable over Knorr, Official Notice, and Shmukler is not 10
sustained. 11
 The rejection of claims 8, 11, 57, and 60 under 35 U.S.C. § 103(a) as 12
unpatentable over Knorr and Official Notice is not sustained. 13
 The rejection of claims 7 and 56 under 35 U.S.C. § 103(a) as 14
unpatentable over Knorr and Silverbrook is sustained. 15
No time period for taking any subsequent action in connection with this 16
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 17
§ 1.136(a)(1)(iv) (2007). 18
19
AFFIRMED-IN-PART 20
21
22
23
Appeal 2010-004550
Application 10/748,745

11
mev 1
2